Practice Strengths

• Patents >>  

• Trademarks and Copyrights >>

Our Prosecution and Portfolio Management Team has second-to-none skills centered upon a fundamental appreciation of how intellectual property assets fit within product life cycles from conception and early development to after-market services and product repair parts. In particular, our lawyers have shared experience in the following activities involved with IP portfolio management:

• Determine whether there is a practical business case for obtaining a patent or trademark
• Meet, discuss and interact with R&D personnel during the development of new products and ideas to help identify patentable subject matter with respect to technology and invention, counsel with respect to strategy and the process of protecting technology through patents, trademarks, copyright and/or trade secrets
• Invention description—develop applications that are positioned to have the greatest opportunity for success and are focused on critical components of a new product
• Help clients develop claim strategies that will ensure strong and effective patent and trademark rights
• Meet with client management to coordinate filings, filing policy and strategy to assist (or in some cases, function as) an in-house patent counsel
• Provide training on IP basics, including patents, trademarks and trade secrets within the context of each client’s unique product development, marketing channels, competitive landscape and agreements they have in place
• Assist in budget preparation and determine the business case for maintaining IP assets for some years subsequent to initiation of relevant products

Every day our lawyers help clients establish, maintain and protect IP portfolios across the country and around the world. Our clients include businesses and individuals that are global, national, regional and local leaders in their market segments—many are household names. In fact, our roster of market-leading clients includes 10 of the FORTUNE 25. Others are leaders of the future—companies with the aspiration and will to drive tomorrow’s high-growth industries.

Patents

Our patent attorneys work with in-house counsel, inventors, product managers and research and development coordinators to draft and file numerous U.S. patent applications each year. Our portfolio development and counseling services include:

• Patent portfolio strategic development
• Intellectual property audits
• Preparation, filing and prosecution of patent applications
• Ex-parte and inter-parte re-examinations
• Counseling related to patent portfolios, including maintenance and exploitation of such portfolios
• Opining and counseling clients regarding the procurement of patent rights
• Reviewing and analyzing client business models and drafting intellectual property strategic memoranda for implementing patenting strategies
• Working with foreign counsel concerning international patent prosecution strategies
• Preparing and rendering noninfringement and infringement opinions of counsel on behalf of clients

The current leadership of the United States Patent and Trademark Office (USPTO) has renewed the practice of encouraging case interviews with examiners and we take advantage of our Washington, D.C., office to schedule such interviews when appropriate. These meetings help to improve the success rate of initial applications and ultimately reduce the cycle time of prosecuting patents.

BakerHostetler’s objective is to assist clients in establishing a “best-of-breed” protocol to properly protect intellectual property assets and to align the development of IP rights in alignment with business plans. In addition, we advise companies on the development of a defensive strategy against third-party adverse claims. We work closely with our clients in ensuring that property rights, which are ultimately obtained, cover the products and services marketed by our client. In addition, we examine, map and match competitor patent portfolios to relevant products and services to determine whether existing patents and patent applications properly relate to competitive products. Our objective is to help counsel our clients’ technical staff and management to those sectors that should be the focus for potential future patent filings, to the extent that the technical staff has an opportunity to innovate and disclose new inventions in those areas. We also counsel client management as to alternative choices of protection of technology by patent or confidential treatment as trade secrets. To enable clients to take advantage of the trade secret approach, we provide counsel with respect to the following:

• Employee agreements
• Nondisclosure agreements
• Trade secret agreements
• Best practices for establishing procedures to prevent misappropriation and loss of trade secrets (security sign in, user level protections, passwords)
• Confidentiality agreements with employees with technical and nontechnical backgrounds to protect data
• Best practices for creating protocols for dealing with trade secrets and nondisclosure agreements
• Maintenance of trade secrets and development of standard protocols
• Trade secret misappropriation: best practices for trade secrets when hiring technical people, exit interview protocol, trade secret policies, nondisclosure agreements, visitor checklist, lock-down procedures (audit service)
• IP audits with respect to trade secret protocols, invention submission protocols, hiring protocols

In order to make the right choices on what to protect, we provide education and guidance as to invention evaluation based on value—a process for evaluating invention disclosures and filing them on a timely basis. We counsel clients in helping to establish incentives for motivating technical personnel and submit invention disclosures for consideration. For clients with facilities in countries with statutory incentive plans, such as the German Employee Inventor Act, we help coordinate the development of procedures to ensure compliance.

From a defensive point of view it is important to develop a patent portfolio that is of interest to competitors so that, in the event a competitor seeks to assert patents against our client, an appropriate counter-response can be mounted. We develop portfolios that help clients negotiate effective cross-licenses without the expenditure of large licensing fees. Moreover, the creation of such portfolios better positions clients for future licensing revenue.

We assist companies in developing an appropriate methodology for handling adverse claims, or anticipating the possibility of adverse claims, by evaluating risks and taking preventive action to avoid litigation. This involves a review of litigation activity in the business sectors in which they operate and monitoring licensing companies and other litigious entities that are asserting patents. The goal is to identify patents that require further study prior to receipt of a notice of infringement, wherever possible. Early identification of problem patents can result in resolution under much more favorable conditions than may be obtained through litigation.

Our interdisciplinary approach enables us to provide cross-border inventor team patent counseling. This is comprehensive advice regarding the unique issues affecting multinational corporations using inventors working in concert across national boundaries. Relevant issues include technology export/import restrictions, tax implications based on nationality assigned to the invention and strategic options affecting the choice of country for the initial “home” patent filings.

The work of our IP Prosecution and Portfolio Management Team is important to all players in the business world. IP assets give competitive advantages to the exclusive right owner vis-à-vis competitors or for producing revenue in the form of licensing or the sale of the specific IP assets. It is important to understand the nature of the assets and fully appreciate the property value that an enterprise has under its control. This is typically done through the mechanism of an IP audit. Once understanding the scope of assets held by the enterprise, it can proceed to an effective licensing program through the development of a carefully thought out plan of what to license, who to license, and under what condition the enterprise is willing to accept engaging in these activities.

top of page

Monetizing Intellectual Property Assets

In order to identify the scope of coverage of a patent portfolio in any particular technical sector, we perform a custom patent portfolio analysis and create customized tools designed to intelligently mine data relating to U.S. and foreign patent portfolios for the key assets of a portfolio. For example, when analyzing a patent portfolio containing thousands of patents, we focus on the strategic valuable patents that offered the greatest possible advantage for our clients. In some cases involving financially stressed companies, our valuation work has been used to determine auction bid prices for patent portfolios. If our clients are more interested in acquiring IP assets, we determine the potential for monetizing the patents in a portfolio, taking into account the present value of such patents, their future royalty potential from licensing and projecting the license-life of such patents.

top of page

Patent Audit and Licensing

One benefit of a patent audit is the identification of potential lacunae within the portfolio that allow potential licensing targets to escape coverage or that minimize the royalties one can obtain from licensing the assets. The gaps that are identified can sometimes be filled by buying third-party patents that are either complementary to the portfolio or that reinforce the portfolio. By filling these gaps and adding IP assets into the licensing business, one can establish a much stronger portfolio and better support a higher royalty base than would be possible otherwise.

During an IP audit, we assess what IP is owned or controlled by the enterprise, the value of the IP, the prospective targets for commercialization and the potential enforcement of the rights. This process examines each patent and determines the scope of protection or potential scope of rights that the property represents and further, whether there is an external commercial need or market for each asset. Considerations such as whether there are avoidance technologies or methodologies that sidestep the use of the assets, whether the asset covers a per se or de facto standard, the magnitude of the market that is covered by each of these assets, are the kinds of assessments that would normally be made during the audit. In addition, consideration must be given to evaluating the potential for enforcement of the rights.

Effective patent licensing typically begins with the development of an operating plan. This plan puts in place clearly stated goals to be reached over a particular time period. Additionally, it provides the appropriate measuring tools and benchmarks to determine whether the plan is performing as projected or needs to be modified. The plan must also outline the resources necessary to carry out the licensing activities, specifically the business unit or product manager most closely related to the assets that are being licensed, since they are most familiar with the technology and the market and can make the most compelling case to offer to licensees.

Tactics for acquiring patents vary greatly based on the needs of a company. In recent years, companies have become watchful of opportunities to acquire patents held by small companies that may be insolvent or in need of capital and have claims that could cover existing or future products. These are the kinds of patents typically bought at relatively low cost by trolls that extract large royalty amounts from commercial companies that use the patents. Alternatively, many companies acquire a portfolio of patents in order to negotiate cross licenses with an asserting party that may have needs under the acquired patent. In some cases, companies will make a strategic acquisition of patents in order to reserve the patents for future use in the development of technology, products and services.

top of page

Annuities—Tools and Programs

Clients are increasingly doing business around the world and seeing competition from outside the United States. As a result, they have recognized the value of foreign patents in protecting their assets and thus their market share and margins. To fully realize that value, however, they require information to perform the cost-benefit analysis for these assets. Our IP Prosecution and Portfolio Management Team has developed tools and programs to assist clients in managing such assets.

Clients are counseled in foreign patent filing strategies so that protection is maximized at minimum cost. By learning and understanding a client’s business, we can develop a customized strategy that serves each client’s individual business objectives.

Once a foreign patent has been granted, we assist our clients in managing assets, particularly with respect to the large cost of foreign annuities. A tool we have used in this regard is the Electronic Annuity Reminder System (EARS) report, which assists with annual annuity reviews to allow foreign patents to be culled where the value to the business no longer justifies the expense. As portfolios become more complex and diverse, this software allows our Team to aid businesses with maintaining portfolios in a cost-effective manner.

The EARS report, which can be tailored to cover any desired time period, is emailed in advance of the payment of annuities. The report provides hypertext links that provide easy access to the patents and patent abstracts, as well as a cumulative total of the estimated annuity charges, in order to ease the decision process. These reports are an invaluable tool in connection with scheduled visits or phone calls during the pay/drop decision process so that better business decisions are made regarding maintaining foreign patents.

top of page

Trademarks and Copyrights

We are proud of BakerHostetler’s robust trademark and copyright practice. We consistently remain up-to-date on legislative, regulatory and judicial activities that affect the trademark practice because this serves as the foundation for our expanding team and continued success. We were recently listed in the “Trademark Insider” report as one of the top trademark firms in the country, based on the total number of new trademark applications submitted to the USPTO.

Our trademark lawyers continually monitor for possible infringement of our clients’ trademarks. When a watch uncovers infringing activity, our Team has a history of success with “cease and desist” letters. Most disputes are resolved at or near the cease and desist letter stage so it is important that the letter is not only well drafted, but that it also is well researched and strongly grounded in law and fact.

Our Team routinely conducts “knockout” trademark availability searches. To the extent that foreign trademark protection becomes necessary, we coordinate a large network of foreign associates in over 100 countries for the purpose of obtaining assessments of trademark availability and registrability in foreign jurisdictions. Additionally, we strategize Madrid Protocol filings in order to save our clients money by eliminating unnecessary middleman law firms where appropriate.

We prepare trademark availability opinions daily and provide strategic advice to our clients. While there may be circumstances in which it is not possible to clear a trademark for a client, the depth of our experience enables us to provide creative counseling to meet our clients’ goals.

Beginning in the 1970s, our lawyers undertook some of the first international licensing efforts for syndicated characters. We launched a major effort to ensure that retailers pay for use of our clients’ characters, in order to avoid the potential for litigation stemming from the purchase of counterfeits. Our work with studios, syndicators and other organizations, such as Major League Baseball Properties, continues today and is part an extensive licensing and copyright practice. We draft licensing, joint development, “work for hire” and international portfolio acquisition agreements. To support this practice, we develop business arrangements, such as restricted use agreements, software licenses, security and escrow agreements, recording agreements, film production pacts and all forms of permissions, agreements and releases.

top of page